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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Zurn

An Investigation By Any Other Name is Still an Investigation

Posted in Discovery

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Mar. 5, 2014) (St. Eve, J.).

Judge St. Eve denied defendants’ (collectively “Zurn”) motion to exclude plaintiff Sloan Valve’s (“Sloan Valve”) expert in this patent litigation involving dual mode flush valves for plumbing fixtures.  Plaintiff’s expert conducted what he called a “survey,” but was in fact an investigation.  The expert, a 27 year veteran of the FBI, coordinated an investigation of approximately 200 bathrooms across the country which plaintiff believed would have either Sloan or Zurn plumbing fixtures.  The expert’s agents photographed specific fixtures using an app that time and location stamped them. 

The Court held that the fact that the expert used the term “survey” did not change the fact that it was an investigation, not a survey as the term is used in the legal context.  And Zurn did not dispute that the expert was qualified to conduct such an investigation.  Furthermore, the investigators did not interview anyone, they just took pictures.  So, there were no hearsay concerns.

Finally, Zurn’s other concerns did not warrant exclusion, although the could be addressed on cross-examination:

  1. The 200 sites were not randomly selected and were selected by Sloan;
  2. The sites were “overwhelmingly” public buildings; and
  3. The investigators did not investigate every bathroom at each site and did not adequately investigate the bathrooms that they did enter.

Reply Expert Reports Must Only Respond to Rebuttal Reports

Posted in Discovery, Local Rules

Sloan Valve Co.. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. June 19, 2013) (St. Eve, J.).

Judge St. Eve granted in part defendant’s (collectively “Zurn”) motion to strike plaintiff Sloan Valve’s (“Sloan”) reply expert report in this patent dispute.  The Federal Rules and the Local Patent Rules do not typically allow reply reports without prior leave of Court for cause, LPR 5.3.  But the parties agreed to reply reports and the Court entered a reply report deadline, at the parties’ request.  So, a reply report was permissible, but only to the extent that it was responsive to the rebuttal report.  On that issue, the Court held as follows:

  • Recalculations using unweighted rations, which were mentioned but not used in the opening report, were permissible because they responded to a criticism in the rebuttal report.
  • The inclusion in calculations of “new” incremental costs was allowable as responsive to the rebuttal report.
  • The addition of an entirely new schedule and damages computation was not allowable.
  • Zurn’s expert was not allowed to file a supplemental expert report because the Court struck the improperly prejudicial portions of the reply report.


Attorneys Fees Reduced Based Upon Duplicative Work

Posted in Damages, Local Rules

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Aug. 27, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Sloan’s fee petition based upon the Court’s finding that defendant Zurn had “continually refused to produce relevant documents despite prior court intervention and a clear obligation to do so . . . .”  Here are the highlights:

  • Sloan’s counsel’s rates were reasonable, based in part upon the fact that Sloan paid the rates without expectation of indemnification or contribution by any third party.  The rates were between $550 and $735 for partners, $455 to $530 for senior counsel and $310 to $370 for associates.
  • Sloan’s 121 hours spent on a motion for sanctions, although it was more complex than the average motion, was not reasonable.  The Court awarded all of the fees for the two most junior attorneys and 20% of the senior attorneys’ fees, citing duplicative and excessive work being done, for a total of approximately $39,000.
  • The Court applied the same 80% reduction for senior attorney time spent on Sloan’s renewed motion for sanctions, resulting in a fee award of approximately $51,000.
  • The Court struck the most senior attorney’s time for Sloan’s reply brief in support of the renewed motion for sanction resulting in an award of approximately $26,500.
  • The Court cut the most senior attorney’s time by 50% for Sloan’s preparation of its response to Zurn’s supplemental submission.  The Court reasoned that many of the tasks could have been performed by a more junior attorney.

The Court’s total award was approximately $140,000.


Late Invalidity Contention Allowed With Sanctions

Posted in Discovery

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 12, 2012) (St. Eve, J.).

Judge St. Eve granted in part plaintiff Sloan’s motion to strike defendant Zurn’s “late asserted” invalidity defense, to compel discovery and for sanctions in this patent case involving dual mode flush valves.

Worn Zurn Flush Valve

Sloan seeks production of information regarding certain worn Zurn flush valves.  While the worn valves may have been created for litigation, the work product doctrine would not cover the valves themselves or factual data regarding their fabrication and testing.  Furthermore, Zurn lost any work product protection to the factual information by claiming that the worn Zurn flush valves invalidate the patent in suit.  The Court, therefore, ordered Zurn to produce the worn valves, all non-privileged, factual information about them and a detailed privilege log.  The Court also ordered a Rule 30(b)(6) deposition on the worn valve and that Zurn pay the costs and reasonable attorney’s fees of the deposition, the motion to compel and one Sloan attorney to attend the deposition because of Zurn’s continued refusal to produce the documents and answer deposition questions.

Community Center Worn Valve

A “plethora of rules” including LPR 2.1(b), 2.3 and 3.2 and Fed. R. Civ. P. 26(e), required Zurn to produce information regarding its Community Center Worn Valve invalidity defense before it did – after serving Zurn’s Final Invalidity Contentions.  And the Community Center and Zurn worn valves were similar, but different.  As such, it was a “close call” whether to allow Zurn to use the Community Center defense.  The Court allowed Zurn to use its defense, but sanctioned Zurn requiring Zurn to pay Sloan’s reasonable attorney’s fees and costs for any necessary Community Center Worn Valve-related discovery.

Defendant Granted Leave to Replead Inequitable Conduct

Posted in Pleading Requirements

Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, Slip Op. (N.D. Ill. Apr. 1, 2012) (St. Eve, J.).

Judge St. Eve granted in part defendants’ (collectively “Zurn”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Sloan Valve’s (“Sloan”) inequitable conduct counterclaims and denied Zurn its request for attorneys’ fees and costs in this patent dispute involving valves.  But to the extent the Court dismissed the counterclaims, it was without prejudice to replead using facts learned during discovery.  Sloan was not prejudiced by the amendment because Sloan was on notice of the facts gleaned during the two year discovery period.

The Court acknowledged the inequitable conduct pleading requirements set forth in Exergen, and noted that they were not changed by the heightened proofs required by Therasense.  The Court also held that at the pleading stage, Zurn need not show that its alleged “intent to deceive is the single most likely explanation for non-disclosure.”   Zurn need only allege facts from which intent may be reasonably inferred.

With respect to Counterclaim III, Sloan waived its argument regarding identity and intent, by failing to challenge them in its first motion to dismiss Zurn’s original Counterclaim III, which was substantively the same as this amended counterclaim.  But even if Sloan had not waived its arguments, Zurn could have met Rule 9(b) pleading standards by amending to add information learned during discovery.

And while the Court’s original pre-Therasense ruling on Zurn’s materiality pleading was based upon the “reasonable examiner” standard, Zurn’s pleadings also met Therasense’s “but for” materiality test.  Zurn pled that but for Sloan’s counsel’s statements during prosecution regarding the size of a plunge and a bushing passage taught by the prior art, at least Claim 1 would not have been allowed.

While Counterclaim IV was not adequately pled, Zurn was given leave to replead.  Zurn’s counterclaim did not identify who withheld the prior art, but Zurn had since identified the individuals during discovery.  Zurn’s materiality pleading was also deficient, but Zurn was granted leave to replead with information learned during discovery.  And Zurn was similarly granted leave to amend its intent allegations.